Chamberlain v. Techtronic: Abstract concepts, garage-door openers, & the Supreme Court

The Supreme Court’s 2013 Alice v. CLS decision set tough new standards for determining whether an invention is a patent-ineligible abstract concept. Since then, the Patent Office and the courts have routinely used the Alice holding to deny patent protection to many thousands of innovative software, business, and financial systems. Worse, the Alice Court never expressly defined what constitutes an ineligible abstract concept. This resulted in wildly inconsistent decisions that even today make it hard to predict when a claim will trigger an Alice rejection.

Last year, new management at the Patent Office tried to address the problem by publishing a less-restrictive, more-concrete interpretation of the Alice rules. This certainly helped, but there are still plenty of instances where otherwise-valid claims are rejected solely because a patent examiner or judge suspects that they stray too far into Alice territory. Numerous patentees have tried to convince the Supreme Court to revise the Alice doctrine, but the High Court has so far refused to get involved.

The latest attempt involves The Chamberlain Group, a manufacturer of building products that include LiftMaster garage-door openers. In 2018, an Illinois District Court found Chamberlain competitor Techtronics guilty of infringing Chamberlain’s 2007 U.S. Patent 7,224,275 for a next-generation door-opener. The court also rejected Techtronics’ assertion that Chamberlain’s claims were invalid as having been anticipated or rendered obvious by earlier inventions. From Chamberlain’s perspective, case closed.

But Techtronics didn’t give up. It appealed to the Federal Circuit Court of Appeals, which used the Alice framework to characterize Chamberlain’s claims as an attempt to patent an ineligible abstract concept. The CAFC asked whether Chamberlain’s claimed invention was “directed to an ineligible concept” by determining whether the “focus of Chamberlain’s claimed advance over the prior art” was a law of nature, a purely mental process, or any other type of invention previously found by the courts to be abstract.

None of this is unusual in an Alice analysis. But here, the CAFC concluded that the patent’s “claimed advance” did not include the door-opener’s physical features, leaving only its wireless communications functionality. The court then declared the invention ineligible because the remaining claim language resembled that of wireless-communications claims deemed to be abstract in earlier cases. (You can read the entire decision at: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2103.Opinion.8-21-2019.pdf)

This raised eyebrows throughout the field. How could a tangible piece of machinery be deemed abstract? Shouldn’t hardware features have been considered when deciding if the claims were directed to an abstract concept? And if the courts can declare even a garage door opener to be abstract, is any invention or technology safe from Alice?

But more to the point, is Alice good policy? Does it protect American innovation and serve the goals of the U.S. patent system? These were some of the questions that Chamberlain asked in May, 2020 when petitioning the Supreme Court to hear its case.
The Supreme Court has regularly punted Alice appeals back to lower courts, refusing to more precisely define what constitutes an abstract concept or to address concerns that the Alice framework conflates patent-eligibility issues like abstractness with patentability requirements, such as novelty and nonobviousness. Critics cite both these omissions as contributing to the surprising CAFC decision, where physical features of a mechanical device were excluded from an abstract-concept analysis on the ground that those features were already known in the field.

Chamberlain could be the first, best chance for a radically different 2020 SCOTUS to revisit these issues. Such a review would be especially well-timed, given recent pressure from Congressional and industry leaders to increase the U.S. Patent system’s ability to compete with foreign governments’ looser patent standards.

It’s far from certain that that the High Court will agree to hear Chamberlain’s arguments. But if it does, obtaining and defending a patent may soon become a lot easier in the United States.